Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
2. The claims are June 20, 2023 was previously entered. Claims 1-20 are under consideration.
Election/Restrictions
3. Applicant's election with traverse of Group B in the reply filed on October 27, 2025 is acknowledged. The traversal is on the ground(s) that Applicants assert that the Examiner has not provided any indication that the content of the claims interpretated in light of the description was considered. In response, the Office points to 37 CFR 1.475(a) which recites in pertinent part:
Where a group of inventions is claimed in a national stage
application, the requirement of unity of invention shall be
fulfilled only when there is a technical relationship among
those inventions involving one or more of the same or
corresponding special technical features. The expression
“special technical features” shall mean those technical
features that define a contribution which each of the
claimed inventions, considered as a whole, makes over
the prior art.
Applicants arguments are not found persuasive because the restriction set forth that there was no special technical feature. Pannell disclosed each and every claimed limitation, therefore Groups A-C lack unity under PCT Rule 13 because this technical feature is not a special technical feature as it does not make a contribution over the prior art. In this case, there is no special technical feature. The groups of inventions did not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack a corresponding special technical feature. Thus,
The requirement is still deemed proper and is therefore made FINAL.
4. Claims 1-6 and 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 27, 2025.
Information Disclosure Statement
5. The information disclosure statement (IDS) submitted on June 23, 2023 and January 31, 2024 were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
6. Claim 20 is objected to because of the following informalities: Claim 20 is dependent upon claim 7. However, claim 20 recites “The method for producing microbial microcapsule..”; but claim 7 is not drawn to a method. Therefore, claim 20 needs appropriate correction to correlate with claim 7.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “fine alga” in claim 11 is a relative phrase which renders the claim indefinite. The phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, it is unclear if “fine alga” refers to the size or the microscopic appearance of the alga such as microalgae. Or if the phrase refers to certain types of algae, like green dust algae. Therefore, the metes and bounds of the phrase “fine alga” have not been defined. Therefore, clarification is required to overcome the rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
8. Claims 7-11 and 20 are rejected under 35 U.S.C. 101 because:
The claimed invention is directed to a microbial microcapsule encapsulating a (A) hydrophobic component having a surface tension above 33.6 mN/m at 25°C in a microorganism (B), wherein the encapsulation percentage is above 60 mass % Encapsulation percentage (mass%) = [mass of (A) hydrophobic component/(mass of
(A) hydrophobic component + dry mass of (B) microorganism)] =< 100 (1) without significantly more. The claims recite a product. This judicial exception is not integrated into a practical application because the claimed invention is directed to a judicial exception (i.e., a process, machine manufacture or composition of matter) . The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because do not add significantly more to the judicial exception.
Question #1: Is the claim to a process, Machine, Manufacture or Composition of Matter? The claims are drawn to: a microbial microcapsule encapsulating a (A) hydrophobic component having a surface tension above 33.6 mN/m at 25°C in a microorganism (B). Thus, the answer to question #1 from the PEG analysis is “Yes”, the rejected claims are directed to a product, which is a statutory category of invention.
The claims thus recite a judicial exception. Therefore, these components cannot be considered to add significantly more to the judicial exception. Thus, the only portions of the claims that add to the judicial exception are routine and conventional in the art and thus do not add significantly more to the judicial exception.
Question #2A-Prong I: Does the claim recite an abstract idea, law of nature, or natural phenomenon? In the instant case, the rejected claims recite a mental step
of determining the encapsulation percentage.
It is also noted that claim 7 indicate a Naturally occurring encapsulating microorganisms include bacteria with protective outer capsules like Streptococcus pneumoniae and Salmonella, and those containing internal protein shells called encapsulins,; Naturally occurring encapsulated yeast primarily refers to pathogenic yeasts like Cryptococcus neoformans and C. gattii, which create a protective polysaccharide capsule in nature (especially in soil/trees/bird droppings) to survive host defenses; and Naturally occurring encapsulating algae aren't one specific type, but rather algae that produce natural coatings like mucilage or are harvested for their polysaccharides (like alginate from brown algae), creating a natural "capsule" for compounds or themselves, with Chlorella & Spirulina (cyanobacteria) being famous for their cell walls used in supplements, while brown seaweeds yield alginates for industrial encapsulation, which is also a judicial exception.
The claim is then analyzed to determine whether it is directed to any judicial exception. The claim limitations set forth a judicial exception, because this type of correlation is a consequence of natural processes, similar to the naturally occurring correlation found to be a law of nature by the Supreme Court in Mayo Collaborative Svcs. v. Prometheus Labs., 566 U.S. __, 132 S. Ct. 1289, 1297 (2012). Additionally, the claims use the equation of Encapsulation percentage (mass%) = [mass of (A) hydrophobic component/(mass of (A) hydrophobic component + dry mass of (B) microorganism)] =< 100 (1) or textual descriptions of math are often considered abstract ideas.
As such, each of the rejected claims recite a mental process that is reasonably considered in this case to be a mental process. Thus, the answer to Question #2A-Prong I is “Yes” because each of the claims recites a judicial exception (i.e. a mental step and a natural product).
Question #2A-Prong II: Does the claim recite additional elements that integrate the judicial exception into a practical application? None of the rejected claims appear to recite an additional element or elements that integrate the judicial exception (i.e. the mental step recited in the claims) into a practical application. For example, the components are naturally occurring. And the description of the encapsulation percentage appears to be nothing more than data gathering activity that is used to provide a basis for the equation. There are no additional components recited in any of the rejected claims that integrate the mental process into a practical application of the judicial exception. Additionally, the claimed equation could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., the mental comparison in University of Utah Research Foundation v. Ambry Genetics Corp., 774 F.3d 755 (Fed. Cir. 2014) or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). Thus, the claim is directed to at least one exception (Step 2A: YES), which may be termed a law of nature, an abstract idea, or both. Note that although the claim recites two nature-based product limitations (e.g., the microorganism and the hydrophobic liquid), the claim as a whole is focused on the products. Thus, there is no need to perform the markedly different characteristics analysis on the recited nature-based product limitations. Therefore, the answer to Question 2A-Prong II is “No”.
Question #2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? Each of the rejected claims recites data-classifying qualities that are well-understood, routine and conventional in the art as well as the judicial exception. Besides the law of nature, the claim does not recite additional components. No other additional elements are recited in the rejected claims. Determining the encapsulating percentage and/or the log P value is well-understood, routine and conventional activity for those in the field. Further, the components are recited at a high level of generality such that it amounts to insignificant activity, e.g., a mere data classifying qualities necessary to define the components. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional machine or a transformation of a particular article, in this claim that distinguishes it from well-understood, routine, and conventional data classifying activity engaged in by scientists prior to applicant’s invention, and at the time the application was filed, e.g., the routine and conventional techniques of defining the qualities of components. Further, it is well established that the mere physical or tangible nature of additional elements such as describing elements or reciting mathematical equations does not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2358-59 (2014)).
Thus, the answer to Question #2B is “No” because none of the rejected claims recite any additional element or elements that make the claim as a whole read on something that is significantly more than the judicial element recited in the claim.
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not invoke any of the considerations that courts have identified as providing significantly more than an exception. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is not eligible. Given the analysis provided above, it is apparent that each of the rejected claims encompasses embodiments that are not directed to statutory subject matter. Therefore, claims 7-11, and 20 are rejected under 35 U.S.C. 101 as being directed to ineligible subject matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claims 7-10 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shizukuishi et al., (JPH 08243378 published 1996-09-24; priority to 1995-11-16).
The claims are drawn to a microbial microcapsule encapsulating a (A) hydrophobic component having a surface tension above 33.6 mN/m at 25°C in a microorganism (B).
Shizukuishi et al., describe a microcapsule is produced by treating the yeast with the enzyme to release the components in the cell outside the cell and after that, treating with the acidic aq. solution and encapsulating the material to be encapsulated into the yeast cell [abstract]. The yeast microorganism has a cell wall; thus teaching claims 9-10. Shizukuishi et al., describe many hydrophobic liquids containing fats and oils have a nutritional function, and they are generally obtained from animals and plants, but recently, they have also been produced from microorganisms. Some of these hydrophobic liquids are effectively used as food materials and feed materials, but many of them are easily altered by heat, light, oxidants, etc., and if they are liquid, they are very difficult to handle. have. It is expected that if the useful hydrophobic liquid can be encapsulated at a higher density than in the conventional method, these drawbacks can be ameliorated and the application to more advanced applications becomes possible [para 9]. Shizukuishi et al., describe The hydrophobic liquid is a substantially water-insoluble liquid, a liquid which becomes a water-insoluble liquid by heating, and a fat-soluble substance such as fatty acid ester or steroid, which is a suitable liquid. Specifically, as simple lipids, monoester type chain simple waxes, complex waxes, triglycerides, and monoglycerides and diglycerides such as monostearin, triolein, soybean oil, corn oil, rice bran oil, safflower oil, cottonseed oil, olive oil, castor oil, Cod oil, squid oil, sardine oil, lard, beef tallow, sheep fat, horse oil [para 11]. It is noted that Cottonseed oil: Generally has a surface tension in the range of 35.00 - 35.40 mN/m. At exactly 25°C, one study measured fresh corn oil at 34.31 mN/m and has a log P value above 1.0. Thus teaching claims 7, 8 and 20.
The encapsulation rate ([weight of lipid in encapsulated yeast cells / dry weight of encapsulated yeast cells] x 100 (%)) was calculated [Encapsulation Step]. For example, when oleic acid is encapsulated by 1N hydrochloric acid treatment, the recovery rate of the encapsulated yeast is 62.6% of the total solid content of the hydrochloric acid treatment residue used and oleic acid. The final recovery of encapsulated oleic acid was 75.5% [Encapsulation Step]. Thus teaching claim 7.
Therefore Shizukuishi et al., anticipates the rejected claims.
Claim Rejections - 35 USC § 102
10. Claims 7 -11 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pannell (EP0242135 published 1990-07-04).
The claims are drawn to a microbial microcapsule encapsulating a (A) hydrophobic component having a surface tension above 33.6 mN/m at 25°C in a microorganism (B).
Pannell teach forming a substance into a microorganism cell capsule, and specifically indicates that 18g of washed Aspergillus niger mycelium was made into a liquid slurry containing 1g mycelium (dry weight), then mixed with 4g of methyl salicylic acid for two hours at 40°C and formed into a capsule (page 2, lines 1-2, example 26). Pannell also indicates that yeast and algae are used as microorganisms, and that the microorganisms have an average diameter of about 5 microns or more (page 2,lines 37-40,45-46). Thus teaching claims 9-11. It is further indicated that the microbial capsules in document typically contain approximately 50-75% of encapsulated substance on the basis of the total weight of the microbially encapsulated product (page 3 ,lines 44-46). Thus teaching claim 1. The surface tension of methyl salicylic acid is 36.3mN/m (evidenced by the instant specification at paragraph [001.]) and the log P value of methyl salicylic acid is1.46 (evidenced by the instant specification at paragraph [0012]). In example 26 of Pannell, the ratio of methyl salicylic acid to the dry weight of the microorganisms is 4. The conditions in example 26 are similar to the conditions in examples 5 and 14 of the present application, and it is highly likely that a microbial cell capsule in which the inclusion rate defined by formula (1) in claim 7 of the present application is greater than 54 mass% would be obtained in example 26 of Pannell. Moreover, in light of the average diameter of the microorganisms described by Pannel.
It is found that the microcapsule described Pannell include microalgae.
Pertinent Art
11. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Cottonseed oil itself, as a complex mixture of triglycerides, does not have a single standard log P (octanol-water partition coefficient) value. Instead, the log P values are associated with its individual constituent fatty acids. The log P value is a measure of a substance's lipophilicity (ability to dissolve in fats, oils, and non-polar solvents) relative to its hydrophilicity (ability to dissolve in water). Higher values indicate greater lipophilicity. Here are the typical log P values for the major fatty acids found in cottonseed oil:
Myristic acid (C14:0): log P ≈ 5.9
Palmitic acid (C16:0): log P ≈ 6.5
Stearic acid (C18:0): log P ≈ 7.3
Oleic acid (C18:1, monounsaturated): log P ≈ 7.6
Linoleic acid (C18:2, polyunsaturated): log P ≈ 6.0
These values highlight the highly lipophilic nature of the oil's components, which is characteristic of all dietary fats and oils.
The surface tension of methyl salicylate at 25 degrees Celsius is approximately 41.5 dynes/cm.
The log P (partition coefficient) for methyl salicylate generally falls in the range of 2.1 to 2.9, indicating moderate lipophilicity, with specific values like 2.3 (XLogP3) from PubChem, 2.86 from a Hansch study, and 2.84 from Chemaxon, making it slightly fat-soluble but still able to dissolve in some water mixtures, useful for its fragrant and topical applications.
Conclusion
12. No claims allowed.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JA-NA A HINES whose telephone number is (571)272-0859. The examiner can normally be reached Monday thru Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Vanessa Ford, can be reached on 571-272-0857. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANA A HINES/Primary Examiner, Art Unit 1645